Ex Parte Vincze et al

Patent Trial and Appeal Board

May 16, 2017

11812598 (P.T.A.B. May. 16, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/812,598 06/20/2007 Albert M. Vincze MLP 7549.2 2463
321 7590 05/18/2017
SFNNTOFR POWFR N T T P EXAMINER
100 NORTH BROADWAY ESSEX, STEPHAN J
17TH FLOOR
ST LOUIS, MO 63102 ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
05/18/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents @ senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT M. VINCZE, DOUGLAS G. CLARK,
VICTOR NASRI SALEH, MALCOM JOHN DEWAR, and
ROBERT W. FRITTS
Appeal 2016-003633
Application 11/812,598
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of our Decision mailed February 27,
2017 (“Dec.”), affirming the Examiner’s rejections of claims 1—15, 19—31,
and 33 under 35 U.S.C. § 103(a). Request for Rehearing filed April 27,
2017 (“Req. Reh.”), 1. We deny Appellants’ request to modify the outcome
of our Decision for the following reasons.
Appellants argue that our Decision does not provide them “any
rebuttal” to the assertion in their Appeal Brief that Brennan’s disclosure of
varying paddles from all flat paddles to all helical paddles is so broad that it
encompasses an excessive and nearly infinite number of possible distinct
Appeal 2016-003633
Application 11/812,598
combinations for the paddles, and does not suggest which possible
combination of flat and helical paddles might be successful for producing
battery paste suited for use in battery plates. Reh. Req. 3^4. Appellants
argue that “a person having skill in the art would have to try each of
numerous possible choices (i.e., every possible combination of paddles), and
Brennan gives no direction as to which is likely to be successful.” Reh. Req.
4. Appellants contend that our Decision ignores this argument and simply
states “a reason for which the [proposed] modification would be made.”
Appellants assert that their argument “is in fact a response to the Board’s
stated reason for the modification because [the Board’s] stated reason is
merely a restatement of the position previously stated by the Examiner.”
Reh. Req. 4—5.
However, as our Decision indicates, Kwok discloses a method for
continuously producing paste for lead acid batteries using a continuous
screw extruder, and Kwok discloses that the residence time (retention time)
of raw materials and resulting end product in the screw extruder varies
depending on rates of reaction and crystallization. Dec. 4; Kwok col. 2,11.
42-43; col. 10,11. 5—9. Our Decision also indicates that Brennan discloses a
continuous mixer comprising interengaging or mating paddles in which
certain of the paddles are twisted on a helix to impart a forward conveying
movement to material through a barrel in the mixer, while other mating
paddles are straight and function primarily to mix material in the barrel.
Dec. 5; Brennan col. 2,11. 17—19; col. 3,11. 38, 50-63. Our Decision further
indicates that Brennan discloses that all straight paddles are utilized when a
very high retention time is required in the barrel, and all helical paddles are
used when a very low retention time is required. Dec. 5; Brennan col. 5,11.
2
Appeal 2016-003633
Application 11/812,598
49—52. Our Decision also indicates that Brennan discloses that the relative
number of straight and helical paddles and their arrangement can be varied
to suit different requirements for mixing, blending, shearing, and retention
time, thus establishing that the ratio of mixing to conveying paddles is a
result-effective variable. Dec. 5; Brennan col. 5,11. 52—55.
We concluded in our Decision—citing In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012) and In re Boesch, 617 F.2d 272, 276
(CCPA 1980)—that the weight of the evidence supports the Examiner’s
conclusion that one of ordinary skill in the art reasonably would have been
led to determine the relative number of straight and helical paddles to use in
the continuous mixing apparatus of Kwok modified to include the paddle
mixer arrangement disclosed in Brennan (as proposed by the Examiner), to
achieve a desired retention time based on particular rates of reaction and
crystallization, such as the ratio recited in claim 1, and would have had
sufficient skill to do so. Dec. 7—8. Accordingly, rather than ignoring
Appellants’ arguments as Appellants now assert, our Decision directly
addresses their arguments by applying the controlling legal framework to the
factual situation presented in this appeal. Id.
As our Decision indicates, because Brennen establishes that the ratio
of mixing to conveying paddles in a continuous mixing apparatus is a result-
effective variable, discovery of the optimum ratio of mixing to conveying
paddles to utilize in Kwok’s modified continuous mixer to achieve a desired
retention time during production of paste for lead acid batteries would have
involved nothing more than routine experimentation that was well within the
level of ordinary skill in the art. Dec. 7—8; Applied Materials 692 F.3d at
1297; Boesch, 617 F.2d at 276. Although one of ordinary skill in the art
3
Appeal 2016-003633
Application 11/812,598
may have had to engage in experimentation requiring significant time and
care to determine the optimum ratio, controlling legal precedent establishes
that such experimentation would nevertheless have been considered non-
inventive, routine experimentation that was well within the level of ordinary
skill in the art. Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804,
809 (Fed. Cir. 1989) (combination diuretic was not patentable where both
components were known in the art and a proper dosage ratio was determined
by experimentation “requiring time and care” that was nevertheless within
the level of ordinary skill in the art and produced predictable results.).
Accordingly, despite the asserted breadth of Brennan’s disclosure that
the relative number of straight and helical paddles and their arrangement can
be varied to suit different requirements for mixing, blending, shearing, and
retention time, and despite any lack of guidance in Brennan regarding
particular ratios suitable for production of battery paste (Reh. Req. 3—4), the
experimentation required to achieve an optimum ratio of mixing to
conveying paddles for production of battery paste would have nevertheless
been well within the level of ordinary skill in the art, and a resulting suitable
ratio achieved through such experimentation—such as the ratio recited in
claim 1—would therefore not impart patentability to a method for
continuously producing battery paste absent a showing of the criticality of
the ratio. Applied Materials 692 F.3d at 1297; Boesch, 617 F.2d at 276;
Merck, 874 F.2d at 809; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (indicating that in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
4
Appeal 2016-003633
Application 11/812,598
prior art range.). Appellants’ argument that one of ordinary skill in the art
would have had to try every possible combination of paddles to arrive at the
optimum ratio does not take into consideration the level of ordinary skill in
the art. Reh. Req. 4. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
As our Decision indicates, Appellants have not demonstrated that the
ratio of mixing paddles to conveying paddles recited in claim 1 imparts
results that would have been unexpected by one of ordinary skill in the art at
the time of the invention relative to the closest prior art, and Appellants
accordingly do not establish the criticality of the recite ratio. Dec. 8—9.
Woodruff, 919 F.2d at 1578.
Accordingly, contrary to Appellants’ assertions, our Decision
indicates that although we considered and addressed Appellants’ arguments
and relied-upon evidence, we concluded that the weight of the evidence
relied-upon in this appeal supports the Examiner’s conclusion that the ratio
of mixing to conveying paddles recited in claim 1 would have been obvious
to one of ordinary skill in the art at the time of Appellants’ invention within
the meaning of 35 U.S.C. § 103(a). Dec. 3—10.
CONCLUSION
In conclusion, based on the foregoing, we grant Appellants’
Request for Rehearing to the extent that we have reconsidered our Decision,
but we deny Appellants’ request to modify the outcome thereof.
5
Appeal 2016-003633
Application 11/812,598
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
DENIED
6